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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`FLEX LOGIX TECHNOLOGIES INC.,
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`Petitioner
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`V.
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`VENKAT KONDA,
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`Patent Owner
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`____________
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`Case PGR2019-00042
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`Patent 10,003,553 B2
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`_________
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`REVISED MOTION TO AMEND UNDER 37 C.F.R. § 42.221
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`
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`FLEX LOGIX EXHIBIT 1044
`Flex Logix Technologies Inc. v. Venkat Konda
`PGR2019-00037
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`Page 1 of 59
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`Patent 10,003,553
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`TABLE OF CONTENTS
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`
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`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED ..... 1
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`II.
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`PATENT OWNER'S RESPONSE TO PETITIONER'S CHALLENGES
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`4
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`A. CHALLENGE GROUND 1 ............................................................................................. 4
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`B. CHALLENGE GROUND 2 ............................................................................................. 7
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`C. CHALLENGE GROUNDS 1 & 2 .................................................................................... 9
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`III. COMPLIANCE WITH STATUTORY AND REGULATORY
`REQUIREMENTS ...................................................................................... 11
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`A. The Proposed Amendments Include A Reasonable Number Of Substitute Claims . 16
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`B. The Substitute Claims Do Not Enlarge The Scope Of The Claims Or Introduce New
`Subject Matter ................................................................................................................. 17
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`C. The Proposed Amendments Respond To A Ground Of Unpatentability Alleged By
`The Petitioner .................................................................................................................. 18
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`D. Explanation Of Substitute Claims And Support In The Original Disclosure And
`Earlier-Filed Disclosures ................................................................................................ 18
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`IV. PATENTABILITY OF THE SUBSTITUTE CLAIMS ........................... 27
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`V. CONCLUSION ............................................................................................ 28
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`APPENDIX OF CONTINGENT SUBSTITUTE CLAIMS ...................... 1
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`PATENT OWNER'S EXHIBIT LIST 1
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`Exhibit No.
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`Description
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`Ex. 2001
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`Ex. 2002
`Ex. 2003
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`Ex. 2004
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`CMOS Circuit Design Layout and Simulation, 3rd
`Edition
`PGR2019-00037 Petition – Paper 1
`PGR2019-00042 Petition – Paper 1
`Venkat Konda Declaration in support of Revised
`Motion to Amend
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`Previously
`Submitted
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`X
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`X
`X
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`PGR2019-00042
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`Patent Owner Venkat Konda respectfully files this Revised Motion to Amend
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`under 37 C.F.R. § 42.221 that new claims 21-40 be treated as a contingent
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`substitution of claims 1-20. See Lectrosonics, Paper 15 at 3. Consequently, this
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`Revised Motion to Amend is contingent upon a finding in a final written decision
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`by the Board that the challenged claims 1-20 are unpatentable. Therefore, this
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`Motion to Amend Under 37 C.F.R. § 42.221 is made on a contingent basis and is
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`made in lieu of a response under 37 C.F.R. § 42.220. Patent Owner is submitting
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`this paper following the approval by the Board1. This Revised Motion to Amend is
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`filed timely as extended2.
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`1 Prior to filing this paper, in an email communication the Board approved
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`that the page limit for Patent Owner’s Revised Motion to Amend is increased to 30
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`pages.
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`2 The Board extended the due date of this Revised Motion to Amend by one
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`month by issuing a scheduling Order (Paper 7) until May 15, 2020 since the Patent
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`Owner requested an extension of DUE DATE 3 (originally April 15, 2020) (Paper
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`14) by email communication in view of the CARES act that came into effect on
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`March 31, 2020.
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`PGR2019-00042
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`Patent Owner’s initial motion to amend was filed on December 11, 2019
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`(Paper 17). In his initial motion, Patent Owner requested Preliminary Guidance
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`from the Board in accordance with the New Pilot Program Concerning Motion to
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`Amend Practice. See 84 Fed. Reg. 9,497 (Mar. 15, 2019). Petitioner filed an
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`Opposition on March 4, 2020 (Paper 19) and a Petitioner’s Reply (Paper 21), and
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`the Board issued its Preliminary Guidance on March 27, 2020 (Paper 22).
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`Patent Owner appreciates the Preliminary Guidance provided by the Board.
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`This Revised Motion to Amend includes proposed substitute claims in place of the
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`previously presented substitute claims and includes amendments and arguments
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`that are responsive to issues raised in the Preliminary Guidance and/or Petitioner’s
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`Opposition, in accordance with the New Pilot Program Concerning Motion to
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`Amend Practice. See 84 Fed. Reg. 9,497 (Mar. 15, 2019).
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`This Motion satisfies the requirements for a Revised Motion to Amend.
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`Claims 1-20 are the challenged claims in this proceeding3. Accordingly substitute
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`3 In addition to this PGR, the Board instituted another PGR2019-00037 filed
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`by the same Petitioner concurrently on the ‘553 Patent. During the conference call
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`with the Board on December 3, 2019, Patent Owner indicated to the Board that he
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`intends to move for the same amendments to the claims in both proceedings.
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`claims are presented for challenged claims 1-20 in the Appendix. This constitutes a
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`“reasonable number of substitute claims.” 35 U.S.C. § 326(d)(1)(B). Additionally,
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`the substitute claims: (1) do not “enlarge the scope of the claims;” (2) do not
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`“introduce new [subject] matter;” and (3) “respond to [the] ground[s] of
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`unpatentability involved in the trial.” 35 U.S.C. § 326(d)(3); 37 C.F.R. §
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`42.221(a)(2)(i), (ii). Patent Owner has therefore satisfied his burden of production.
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`In the present case, the sole inventor, Venkat Konda, holds a Ph.D.
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`degree in Computer Science and engineering and had experience in designing,
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`developing, researching and teaching different types of interconnection networks,
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`for over two decades at the time of the effective priority date of the ‘553 Patent and
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`submits this Revised Motion to Amend with Venkat Konda’s declaration. See Ex.
`
`2004.
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`Because Patent Owner amended the language of the substitute independent
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`claims 21 and 31, it is necessary to amend the three unchallenged dependent claims
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`28, 36, and 40 to provide appropriate antecedent basis in them. Furthermore, since
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`the Board instituted another PGR2019-00037 by the same Petitioner concurrently
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`Accordingly, the same amended claims are submitted in both the proceedings, i.e.
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`PGR2019-00037 and PGR2019-00042.
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`PGR2019-00042
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`Paper No. 24
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`and all the claims 1-20 are challenged in PGR2019-00037, all the claims 1-20 are
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`amended with substitute claims 21-40 in the Revised Motion to Amend for
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`PGR2019-00037 filed concurrently. Accordingly, Patent Owner is filing this
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`Revised Motion to Amend for both the PGR2019-00037 and PGR2019-00042, and
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`submitting the same substitute amended claims for the both the PGR2019-00037
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`and PGR2019-00042.
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`II. PATENT OWNER'S RESPONSE TO PETITIONER'S CHALLENGES
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`A. CHALLENGE GROUND 1
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`Petitioner’s challenge Ground 1 is that Claims 1-7, 9-15, and 17-19 are
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`unpatentable under AIA 35 U.S.C. § 102(a)(1) as being anticipated by Published
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`PCT Application No. WO 2008/109756 (“Konda ‘756 PCT”) (Ex. 1009).
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`The subject matter of substitute independent claim 21 is distinguishable over
`
`Konda ‘756 PCT because at least a first multiplexer of said plurality of
`
`multiplexers of a first said switch of size
`
` where
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`comprising more
`
`inputs than a second multiplexer of said plurality of multiplexers of the first said
`
`switch of size
`
` as disclosed in FIG. 10B of the ‘553 patent is claimed. In
`
`contrast Konda ‘756 PCT shows switch of size
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` in a stage comprising
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`
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`inputs and
`
` outputs and with no multiplexers. Therefore Konda ‘756 PCT does
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`not anticipate the subject matter of the substitute claim 21 under AIA 35 U.S.C. §
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`102(a)(1).
`
`The subject matter of substitute independent claim 21 is further
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`distinguishable over Konda ‘756 PCT because at least one input of a multiplexer of
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`said plurality of multiplexers of said switch of size
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` of a first stage of said
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`plurality of stages of said ring of a first partial multi-stage hierarchical network of
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`said plurality of partial multi-stage hierarchical networks connected from the
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`output of a multiplexer of said plurality of multiplexers of said switch of size
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` of a second stage of said plurality of stages of said ring of said first partial
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`multi-stage hierarchical network or a second partial multi-stage hierarchical
`
`network of said plurality of partial multi-stage hierarchical networks, as disclosed
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`in FIG. 2E of the ‘553 patent is claimed. In contrast Konda ‘756 PCT does not
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`disclose this structure. Therefore Konda ‘756 PCT does not anticipate the subject
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`matter of the substitute claim 21 under AIA 35 U.S.C. § 102(a)(1).
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`The subject matter of substitute independent claim 31 is distinguishable over
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`Konda ‘756 PCT because at least a first multiplexer of said plurality of
`
`multiplexers of a first said switch of size
`
` where
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`comprising more
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`inputs than a second multiplexer of said plurality of multiplexers of the first said
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`switch of size
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` as disclosed in FIG. 10B of the ‘553 patent is claimed. In
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`contrast Konda ‘756 PCT shows a switch of size
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` in a stage comprising
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`
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`inputs and
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` outputs with no multiplexers. Therefore Konda ‘756 PCT does not
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`anticipate the subject matter of the substitute claim 31 under AIA 35 U.S.C. §
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`102(a)(1).
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`The subject matter of substitute independent claim 31 is distinguishable over
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`Konda ‘756 PCT because at least one input of a multiplexer of said plurality of
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`multiplexers of said switch of size
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` of a first stage of said plurality of stages
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`of said ring of a first partial multi-stage hierarchical network of said plurality of
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`partial multi-stage hierarchical networks connected from the output of a
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`multiplexer of said plurality of multiplexers of said switch of size
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` of a
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`second stage of said plurality of stages of said ring of said first partial multi-stage
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`hierarchical network or a second partial multi-stage hierarchical network of said
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`plurality of partial multi-stage hierarchical networks, as disclosed in FIG. 2E of the
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`‘553 patent is claimed. In contrast Konda ‘756 PCT does not disclose this
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`structure. Therefore Konda ‘756 PCT does not anticipate the subject matter of the
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`substitute claim 31 under AIA 35 U.S.C. § 102(a)(1).
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`B. CHALLENGE GROUND 2
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`Petitioner’s challenge Ground 2 is that Claims 1-7, 9-15, and 17-19 are
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`unpatentable under AIA 35 U.S.C. § 103 as obvious over Konda ‘756 PCT in view
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`of U.S. Patent No. 6,940,308 to Wong (“Wong”) (Ex. 1008).
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`The subject matter of substitute independent claim 21 is distinguishable over
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`Konda ‘756 PCT in view of Wong because at least a first multiplexer of said
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`plurality of multiplexers of a first said switch of size
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` where
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`comprising more inputs than a second multiplexer of said plurality of multiplexers
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`of the first said switch of size
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` as disclosed in FIG. 10B of the ‘553 patent is
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`claimed. In contrast Konda ‘756 PCT in view of Wong shows a switch of size
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` in a stage comprising
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` inputs and
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` outputs with only
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`and
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`multiplexers having only 2 inputs. Therefore Wong does not cure the deficiency in
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`Konda ‘756 PCT that
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`and so does not render the subject matter of the
`
`substitute claim 21 obvious under AIA 35 U.S.C. § 103.
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`The subject matter of substitute independent claim 21 is distinguishable over
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`Konda ‘756 PCT in view of Wong because at least one input of a multiplexer of
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`said plurality of multiplexers of said switch of size
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` of a first stage of said
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`plurality of stages of said ring of a first partial multi-stage hierarchical network of
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`said plurality of partial multi-stage hierarchical networks connected from the
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`output of a multiplexer of said plurality of multiplexers of said switch of size
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` of a second stage of said plurality of stages of said ring of said first partial
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`multi-stage hierarchical network or a second partial multi-stage hierarchical
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`network of said plurality of partial multi-stage hierarchical networks, as disclosed
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`in FIG. 2E of the ‘553 patent is claimed. In contrast Konda ‘756 PCT modified in
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`view of Wong does not disclose this structure. Therefore Konda ‘756 PCT in view
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`of Wong does not render the subject matter of the substitute claim 21 obvious
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`under AIA 35 U.S.C. § 103.
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`The subject matter of substitute independent claim 31 is distinguishable over
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`Konda ‘756 PCT in view of Wong because at least a first multiplexer of said
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`plurality of multiplexers of a first said switch of size
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` where
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`comprising more inputs than a second multiplexer of said plurality of multiplexers
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`of the first said switch of size
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` as disclosed in FIG. 10B of the ‘553 patent is
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`claimed. In contrast Konda ‘756 PCT modified in view of Wong shows a switch of
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`size
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` in a stage comprising
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` inputs and
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` outputs with only
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`and
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`multiplexers having only 2 inputs. Therefore Wong does not cure the deficiency in
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`Konda ‘756 PCT that
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`and so does not render the subject matter of the
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`substitute claim 31 obvious under AIA 35 U.S.C. § 103.
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`The subject matter of substitute independent claim 31 is distinguishable over
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`Konda ‘756 PCT in view of Wong because at least one input of a multiplexer of
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`said plurality of multiplexers of said switch of size
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` of a first stage of said
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`plurality of stages of said ring of a first partial multi-stage hierarchical network of
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`said plurality of partial multi-stage hierarchical networks connected from the
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`output of a multiplexer of said plurality of multiplexers of said switch of size
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` of a second stage of said plurality of stages of said ring of said first partial
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`multi-stage hierarchical network or a second partial multi-stage hierarchical
`
`network of said plurality of partial multi-stage hierarchical networks, as disclosed
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`in FIG. 2E of the ‘553 patent is claimed. In contrast Konda ‘756 PCT in view of
`
`Wong does not disclose this structure. Therefore Konda ‘756 PCT in view of Wong
`
`does not render the subject matter of the substitute claim 31 obvious under AIA 35
`
`U.S.C. § 103.
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`C. CHALLENGE GROUNDS 1 & 2
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`Fundamentally the ‘553 patent (Ex. 1001) issued from patent application No.
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`15/140,470 (“the ‘470 application”, Ex. 1004) from its title namely “Optimization
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`of Multi-stage Hierarchical networks for practical routing applications” itself
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`discloses the significant reduction of stages in the rings of hierarchical networks
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`among other optimizations by illustrating to a Person of Ordinary Skill In The Art
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`(“POSITA”) the significant benefits of the ‘470 application over Konda ‘756 PCT
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`and Konda ‘756 PCT in view of Wong. Konda ‘756 PCT discloses layouts of fully
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`connected multi-stage hierarchical networks including N*logN stages. A few
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`examples of the disclosure of ‘470 application where it is clearly described that
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`there is a significant reduction of stages in the rings is given below:
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`1) “Fully connected Benes and butterfly fat tree networks are an over kill for
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`certain practical routing applications and need to be optimized to
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`significantly improve area, power and performance of the routing network.”
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`(Ex. 1004, 210:19-21)
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`2) “The optimized multi-stage networks provide high routability for broadcast,
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`unicast and multicast connections, yet with the benefits of significantly
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`lower cross points hence smaller area, lower signal latency, lower power and
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`with significant fast compilation or routing time.” (Ex. 1004, 211:13-16)
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`3) “The current invention discloses the optimization of multi-stage hierarchical
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`networks for practical routing applications of numerous types of multi-stage
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`networks. The optimizations disclosed in the current invention are applicable
`
`to including the numerous generalized multi-stage networks disclosed in the
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`following patent applications: ... and generalized cube connected cycles
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`networks
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` for s = 1,2,3 or any number in general.” (Ex.
`
`1004, 217:5-218:25) [It must be noted that all the applications mentioned
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`here are part of Konda ‘756 PCT] So it is clearly disclosed that all the
`
`embodiments of multi-stage hierarchical networks disclosed in the ‘470
`
`application provide significant reduction of stages and other optimizations.
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`Accordingly, the subject matter of substitute independent claim 21 is
`
`distinguishable over Konda ‘756 PCT and also Konda ‘756 PCT in view of Wong.
`
`Similarly the subject matter of substitute independent claim 31 is distinguishable
`
`over Konda ‘756 PCT and also Konda ‘756 PCT in view of Wong.
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`III. COMPLIANCE WITH STATUTORY AND REGULATORY
`REQUIREMENTS
`
`In response to the question raised by the Board in the paper (Paper 22)
`
`regarding “inlet links” and “outlet links”, term “inlet links” is used to refer to the
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`links coming into the multi-stage network from outside, and term “outlet links” is
`
`used to refer to the links going out of the multi-stage network from inside. Also the
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`inputs and outputs to a computational block are referred to as “inlet links” and
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`“outlet links”, respectively (Ex. 1004, 220:27-30). According to this definition, for
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`example, an inlet link of a multi-stage network is connected from an outlet link of
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`a computational block. Also, from a multi-stage network point of view, an inlet
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`link to the multi-stage network is connected to an input of a switch in the multi-
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`stage network. Since both Claim 21 and 31 recite inlet links and outlet links of the
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`multi-stage network, for example, an inlet link is connected to an input of a switch
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`in the network. Similarly, an outlet link is connected from an output of a switch in
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`the network.
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`Also per Board’s guidance claim dependencies are fixed and in appropriate
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`form now.
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`The following table gives details of terms deleted and other terms replaced
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`and meets the three criteria for the amendments made to the claims 1) in response
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`to a Ground 2) without claim broadening, and 3) with written specification support:
`
`Term deleted or
`
`Met all three criteria 1) in response to a Ground, 2) no-
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`replaced
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`broadening, 3) with written specification support
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`Zero or more cross
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`To remedy indefiniteness “zero or more” is deleted;
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`links; Zero or
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` “cross links” are replaced with “hop wires” which further
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`more straight links
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`comprise “internal hop wires” and “external hop wires”, and
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`(Claims 1 and 11)
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`“straight links” is replaced with “internal connections” to
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`adhere to the terms in the two priority applications. (So
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`meets all three criteria since it is neutral on broadening)
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`“Forward
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`To comply with the written specification of the two priority
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`connecting links”
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`applications “Forward connecting links” and “Backward
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`and “Backward
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`connecting links” are either “internal connections” or “hop
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`connecting links”
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`wires”. (So meets all three criteria since it is neutral on
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`(Claims 1 and 9)
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`broadening)
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`“Subnetwork”
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`To comply with the written specification of the two priority
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`
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`applications “Sub-network” is replaced with “partial multi-
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`stage hierarchical network” and accordingly “network” is
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`replaced with “multi-stage hierarchical network”.
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`(So meets all three criteria since it is neutral on broadening)
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`(In Claims 1-3, 7-13, and 15-20)
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`“Incoming link”
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`To comply with the written specification of the two priority
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`and “Outgoing
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`applications “Incoming link” is replaced with “input” as
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`link” (in Claims 1,
`
`both terms mean the same; and similarly “Outgoing link” is
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`5, 9, 11, 17)
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`replaced with “output” as both terms mean the same.
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`“Input” and “output” are used several times in the
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`specification.
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`(So meets all three criteria since it is neutral on broadening)
`
`“multiplexers of
`
`In response to the antecedent issue “multiplexers of size
`
`size
`
`” is
`
`” is defined first. (So meets all three criteria)
`
`defined first
`
`(In Claims 1, 11)
`
`An example of
`
`In response to indefiniteness “a plurality of partial multi-
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`
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`Page 13 of 59
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`2d
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`Page 16 of 59
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`Patent Owner’s Revised Motion to Amend
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`indefiniteness issue
`
`stage hierarchical networks” is introduced and referred to
`
`raised; and several
`
`subsequently as “each partial multi-stage hierarchical
`
`similar changes are
`
`network of said plurality of partial multi-stage hierarchical
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`made.
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`networks” (So meets all three criteria) (In several claims
`
`including Claims 1 and 11)
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`“Incoming cross
`
`To comply with the written specification of the two priority
`
`links” and
`
`applications “Incoming cross links” is replaced with “hop
`
`“outgoing cross
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`wires or external hop wires or internal hop wires” as these
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`links” are deleted
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`terms mean the same and similarly “Outgoing cross link” is
`
`replaced with “hop wires or external hop wires or internal
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`hop wires” as these terms mean the same.
`
`(So meets all three criteria since it is neutral on broadening)
`
`(In Claim 25)
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`“number of rows”
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`To comply with the written specification of the two priority
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`and “number of
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`applications “number of rows” and “number of columns”
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`columns” deleted
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`are deleted.
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`(So meets all three criteria since it is neutral on broadening)
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`(In Claims 8, 16, 20)
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`“higher stage”,
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`To comply with the written specification of the two priority
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`
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`Page 14 of 59
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`Page 17 of 59
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`“small in number”,
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`applications “higher stage”, “small in number”, and “large
`
`and “large in
`
`in number” are deleted.
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`number” are
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`(So meets all three criteria since it is neutral on broadening)
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`deleted
`
`(In Claims 8, 16, 20)
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`“Flip flop” is
`
`In response to the new subject matter issue, flip flop is
`
`deleted.
`
`deleted. (In Claim 9)
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`“ stages, where
`
`In response to the enablement issue raised, “ stages, where
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` ” (in several
`
` ” is substituted with “plurality of stages” (So meets all
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`claims including
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`three criteria since it is neutral on broadening)
`
`Claims 1 and 11)
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`“vertical links”,
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`To comply with the written specification of the two priority
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`“horizontal links”
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`applications “vertical links” is substituted with “plurality of
`
`(In claims 2 – 4 and
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`vertical external hop wires” and “horizontal links” is
`
`12 – 14)
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`substituted with “plurality of horizontal external hop wires”
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`(So meets all three criteria since it is neutral on broadening)
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`“hop length
`
`...
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`To comply with the written specification of the two priority
`
`where
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`” and
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`applications “hop length
`
`... where
`
`” is replaced with
`
`“hop length ...
`
`“hop length
`
`... where
`
`” and “hop length ... where
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`where
`
`”
`
`” is replaced with “hop length
`
`... where
`
`”.
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`Page 15 of 59
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`
`y
`
`1y
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`y
`
`1y
`
`h
`
`0h
`
`v
`
`0v
`
`h
`
`0h
`
`h
`
`1h
`
`v
`
`0v
`
`v
`
`1v
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`Page 18 of 59
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`(So meets all three criteria since it is neutral on broadening)
`
`(In Claims 4 and 14)
`
`
`
` “final stage” is
`
`To comply with the written specification of the two priority
`
`deleted.
`
`applications “final stage” is deleted.
`
`(So meets all three criteria since it is neutral on broadening)
`
`(In claim 19)
`
`
`
`In the Patent Owner’s preliminary response (Paper 5, 20-43), Patent owner
`
`has illustrated with diagrams the details of ring, hop wires, internal hop wires,
`
`external hop wires, hop length, and hop wire connection chart. The terms forward
`
`connecting links, backward connecting links are illustrated in the incorporated by
`
`reference patents and patent applications of the ‘470. These illustrations are helpful
`
`to follow the proposed substitute claims 31-40 presented in the Appendix.
`
`A. The Proposed Amendments Include A Reasonable Number Of Substitute
`Claims
`
`The proposed amendments are presented in the Appendix attached hereto,
`
`pursuant to 37 C.F.R. § 42.221(b). Patent Owner cancels claims 1-20 and proposes
`
`substitute claims, namely, claims 21-40. Because the challenged claims have been
`
`cancelled and substitute claims are proposed, this constitutes a “reasonable number
`Page 16 of 59
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`Page 19 of 59
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`of substitute claims.” 37 C.F.R. § 42.221(a)(3). As shown in the Appendix, claims
`
`21-40 include all of the limitations of original claims 1-20. Changes in claims 1-20
`
`are shown by underlining for additions and brackets for deletions.
`
`B. The Substitute Claims Do Not Enlarge The Scope Of The Claims Or
`Introduce New Subject Matter
`
`Substitute claims 21-30 are based on cancelled claims 1-20, but further
`
`include narrowing amendments. Substitute claims 21-40 are narrower than original
`
`claims 1 – 20 because the term “network” in claims 1 – 20 is substituted with
`
`“multi-stage hierarchical network” in claims 21 – 40. Term “a ring” in claims 21
`
`and 27-28 and term “at least one ring” introduced in claims 31, 36, and 40 narrows
`
`claims 21, 27, 28, 31, 36, and 40. Usage of term “entry stage” in claims 21 and 31
`
`and usage of term “last stage” in claims 21 and 31, for example, “each inlet link of
`
`said... is connected to... said switch of size
`
` of [a] either said entry stage or
`
`said last stage of said plurality of stages” narrows both of the independent claims
`
`since each inlet and each outlet are connected to either the entry stage or last stage
`
`of said plurality of stages, which in turn narrows all of the dependent claims as
`
`well. Definition of term “a plurality of multiplexers of size
`
`” and referring to
`
`them in claims 21 and 31 narrows both of the independent claims, which in turn
`
`narrows all of the dependent claims as well.
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`
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`Page 17 of 59
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`2d
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`Page 20 of 59
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`Patent Owner’s Revised Motion to Amend
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`Phrase “said switch comprising at least one input connected from one of the
`
`outputs of said switch of a second stage of said plurality of stages of said ring of
`
`one partial multi-stage hierarchical network of said plurality of partial multi-stage
`
`hierarchical networks” in claims 21 and 31 narrows both of the independent
`
`claims, which in turn narrows all of the dependent claims as well.
`
`Because substitute claims 21-40 narrow the scope of claims 1-20, the
`
`substitute claims do not expand the scope of the patent and thus comply with the
`
`requirements of 37 C.F.R. § 42.221(a)(2)(ii).
`
`C. The Proposed Amendments Respond To A Ground Of Unpatentability
`Alleged By The Petitioner
`
`The proposed substitute claims respond to an asserted ground of
`
`unpatentability. The substitute claims respond to Petitioner’s argument that claims
`
`1-20 are unpatentable under AIA 35 U.S.C. § 112(b) as failing to particularly point
`
`out and distinctly claim the subject matter (ground 1), unpatentable under AIA 35
`
`U.S.C. § 112(a) as failing to satisfy the written description requirement (ground 2),
`
`and Claims 1-20 are unpatentable under AIA 35 U.S.C. § 112(a) as failing to
`
`satisfy the enablement requirement (ground 3).
`
`D. Explanation Of Substitute Claims And Support In The Original Disclosure
`And Earlier-Filed Disclosures
`
`Support for the proposed substitute claims is found in “the original
`
`disclosure of the patent.” See 37 C.F.R. § 42.221(b)(1)-(2). The ‘553 patent (Ex.
`
`
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`Page 18 of 59
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`Page 21 of 59
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`Patent Owner’s Revised Motion to Amend
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`1001) issued from patent application No. 15/140,470 (“the ‘470 application”, Ex.
`
`1004) filed on April 28, 2016, which is a continuation application to patent
`
`application No. 14/199,168, filed on March 6, 2014 (“the ‘168 application”, Ex.
`
`1005), which was granted as U.S. Patent No. 9,374,322 (“the ‘322 patent”, Ex.
`
`1035) which in turn is a continuation application to PCT Application No.
`
`PCT/US12/53814 (“the ‘814 PCT application”, Ex. 1006), filed September 6, 2012
`
`which in turn is a continuation-in-part and claims priority to U.S. Provisional
`
`Patent Application Serial No. 61/531,615, filed September 7, 2011 (“the ‘615
`
`provisional application”, Ex. 1007). The complete priority chain of the ‘553 patent
`
`is illustrated in Paper 6, Page 7.
`
`Accordingly the entirety of the subject matter disclosed in the ‘470
`
`application claims priority to the filing date of the ‘615 provisional application
`
`filed on September 7, 2011, excepting 4 diagrams, namely, FIG. 1B, FIG. 2E, FIG.
`
`3B, and FIG. 16A which claim priority to the filing date of the ‘814 PCT
`
`application, September 6, 2012. (Also only the titles of the FIG. 1 and FIG. 3 in the
`
`‘615 provisional application are changed to FIG. 1A and FIG. 3A, respectively, in
`
`all the rest of the applications in the priority chain of the ‘470 application).
`
`Exemplary support for the proposed substitute claims is provided in the
`
`following table with reference to the above-identified patent applications and/or
`
`patents. To save space, in the first column of the following table, Parts of or
`
`
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`Page 19 of 59
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`Page 22 of 59
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`Patent Owner’s Revised Motion to Amend
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`complete Claim language of each claim is referred to by their corresponding page
`
`and line numbers of the complete amendments shown with respect to the substitute
`
`claims in the Appendix.
`
`
`
`
`
`Exemplary Support in Priority documents
`
`Reference to the
`
`The ‘470
`
`The ‘168
`
`The ‘814
`
`The ‘615
`
`pages:lines to the
`
`application
`
`application
`
`PCT
`
`Provisional
`
`Contingent
`
`(Ex: 1004)
`
`(Ex. 1005)
`
`Application
`
`Application
`
`Substitute Claim
`
`(Ex. 1006)
`
`(Ex. 1007)
`
`Language in
`
`Appendix
`
` 219:19 –
`
` 196:12 –21,
`
` 13:12 –21,
`
` 13:7 –16,
`
`(Claim 21)
`
`220:2,
`
`
`
`
`
`
`
` 2:11 - 3:3
`
` 220:19 –
`
` 197:11 –
`
` 14:11 –
`
` 14:6 –29
`
`221:12
`
`198:4
`
`15:4
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`
`
`
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`Page 20 of 59
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`Page 23 of 59
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
` 212:21-22,
`
` 189:18-1
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